Ex Parte Holzapfel et al

Patent Trial and Appeal Board

Feb 21, 2017

13068659 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
56/493 7034
EXAMINER
GRAY, SUNGHEE Y
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
13/068,659 05/16/2011
7590757
BGL
P.O. BOX 10395
CHICAGO, IL 60610
Wolfgang Holzapfel
02/21/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG HOLZAPFEL, MICHAEL HERMANN, and
KARSTEN SANDIG
Appeal 2015-000763
Application 13/068,659
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON REHEARING
Appellants request rehearing1 of a Decision on Rehearing dated
September 30, 2016 (“Second Decision”), affirming the Examiner’s decision
to reject claims 1—6 and 8—23 under 35 U.S.C. § 103(a) and designating the
affirmance as new grounds of rejection under 37 C.F.R. § 41.50(b). Second
Decision 2, 5.
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board and evidence not
previously relied on in the briefs are not permitted in a request for rehearing
1 Request for rehearing dated November 29, 2016 (“second request”).
Appeal 2015-000763
Application 13/068,659
except as permitted by 37 C.F.R. § 41.52(a)(2) through (a)(4). 37 C.F.R. §
41.52(a)(1) (2014).
I.
In the words of the Appellants, the issue on rehearing is:
whether [Sandig] inherently discloses a reflector unit that
includes two wave front correctors and a beam direction inverter,
wherein the reflector unit, as a whole, has “a structure so that it
is ensured that wave front deformations of said partial beams,
which result via a first diffraction at said scale, are converted into
wave front deformations that compensate for resultant wave front
deformations of said partial beams upon a second diffraction at
said scale” as recited in claim 1.
Second Request 2 (emphasis added).
The Appellants provide a side-by-side comparison of an embodiment
of the Appellants’ reflector unit and Sandig’s scanning plate 13 (Sandig
Figs, la—Id) in an attempt to show that Sandig’s scanning plate 13 does not
have the same structure as the Appellants’ reflector unit, and thus show error
in the Board’s finding of inherency. See Second Request 3.
The Appellants argue that the side-by-side comparison:
shows many significant structural differences between the
embodiment of FIGS. 2-5 of Appellants’ Specification and the
embodiment of FIGS, la-d of Sandig. For example, Appellants
previously pointed out in their Appeal Brief filed on May 30,
2014 that gratings 14.1-.4 of Sandig had two functions: act as a
periodic deflection grating in the measuring direction x and, in
the y direction, act as a cylinder lens that focused incoming
light beams and collimated light beams again while Appellants’
Specification failed to disclose any optical dichotomy in the x
and y directions for its first and second wave front correctors
24.1a-b, 24.2a-b.
Second Request 6.
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Application 13/068,659
The Appellants also argue “[tjhere is ... no discussion in Sandig that
its scanning gratings 14.1, 14.2, 14.3, 14.4 perform the function of
correcting a wave front.” Second Request 7. Thus, according to the
Appellants, “there is no support in Sandig that its scanning gratings 14.1,
14.2, 14.3, 14.4 can be considered as wave front correctors.” Id.
Claim 1 recites an optical position measuring instrument comprising,
inter alia, a reflector unit comprising a first wave front corrector, a beam
direction inverter, and a second wave front corrector. In a first exemplary
embodiment, the Appellants disclose that wave front correctors 24.1a, 24.1b,
24.2a, 24.2b are “shown as diffractive optical elements in the form of
scanning gratings.” Spec. 1 72. The Appellants disclose:
- the wave front correctors are each embodied as
diffractive combination elements in the form of scanning
gratings, which moreover have at least one of the following
additional optical functionalities on the partial beams striking
them:
- an optical deflection effect',
- an optical splitting or uniting effect;
- an optical focusing effect on the reflector mirror.
Spec. ^21 (emphasis added).
In the scanning unit of Sandig, partial light beams are deflected in a
defined way by scanning gratings 14.1, 14.2 and renewed deflection of the
transmitted partial light beams takes place via scanning gratings 14.3, 14.4.
Sandig H 101, 102. Moreover, Sandig discloses that scanning gratings 14.1,
14.2, 14.3, and 14.4 focus incoming light beams on reflector elements.
Sandig 1103. Based on the foregoing, we find Sandig’s scanning gratings
14.1, 14.2, 14.3, and 14.4 have at least the additional optical functionalities
of providing an optical deflection effect and an optical focusing effect on a
3
Appeal 2015-000763
Application 13/068,659
reflector mirror, and thus fall within the Appellants’ definition of wave front
correctors.
As for the Appellants’ argument that Sandig’s scanning gratings 14.1—
14.4 have a dual function (i.e., act as a periodic deflection grating in the
measuring direction x and, in the y direction, act as a cylinder lens that
focusses incoming light beams and collimates light beams),2 the Appellants
have failed to explain, in sufficient detail, why the dual function of Sandig’s
scanning gratings would prevent the scanning gratings from functioning as
wave front correctors or prevent Sandig’s scanning unit, as a whole, from
functioning as recited in claim 1.
Based on the foregoing, a preponderance of the evidence establishes
that the claimed reflector unit and Sandig’s scanning unit, which comprises
scanning gratings 14.1, 14.2, 14.3, 14.4, are substantially the same.3 4Thus,
the burden properly shifted to the Appellants to show that Sandig’s reflector
unit does not necessarily have:
a structure so that it is ensured that wave front deformations of
said partial beams, which result via a first diffraction at said
scale, are converted into wave front deformations that
compensate for resultant wave front deformations of said partial
2 Second Request 6, 8; see also First Request 6 (citing Sandig 1103).
3 The Examiner and the Board found Sandig discloses that triple prisms can
be used for back reflection of beams in Sandig’s scanning unit. First
Decision dated July 20, 2016 (“First Decision”), at 9; Second Decision 3;
see also Sandig 1 89. The Examiner and the Board also found that the triple
prisms disclosed in Sandig correspond to the claimed beam direction
inverter. See First Decision 9; Second Decision 3; see also Second Request
4 (triple prisms or triple mirrors correspond to claimed beam direction
inverter). On rehearing, the Appellants do not direct us to any error in those
findings.
4
Appeal 2015-000763
Application 13/068,659
beams upon a second diffraction at said scale [as recited in
claim 1],
App. Br. 14. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the
claimed and prior art products are identical or substantially identical, the
USPTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of the claimed product);
see also PAR Pharm., Inc. v. TWIPharms., Inc., 773 F.3d 1186, 1195 (Fed.
Cir. 2014) (a limitation is inherently disclosed “when the limitation at issue
is the ‘natural result’ of the combination of prior art elements”). On appeal,
the Appellants have failed to satisfy that burden.4
Finally, the Appellants argue there are seven additional structural
differences between the Appellants’ reflector unit and Sandig’s scanning
plate 13. Second Request 9-11. The Appellants did not rely on those
alleged structural differences in its Appeal Brief, Reply Brief, or first
Request for Rehearing.5 Therefore, the Appellants’ argument is untimely
raised in the second Request for Rehearing. See 37 C.F.R. § 41.52(a)(1).
Moreover, the alleged structural differences relied on by the Appellants are
not expressly claimed, and the Appellants have failed to show that they are
inherent in the functional language of claim 1.
4 We note that the instant Application and Sandig name two common
inventors (Wolfgang Holzapfel and Karsten Sandig) and are assigned to the
same assignee (Dr. Johannes Heidenhain GmbH). Thus, the Appellants are
in a good position to show that the scanning unit disclosed in Sandig does
not necessarily perform the claimed function. See Best, 562 F.2d at 1255
(fairness of the burden of proof “is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products”).
5 First Request for Rehearing dated September 12, 2016 (“first request”).
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Application 13/068,659
II.
The Appellants’ Request for Rehearing is granted. The Decision on
Appeal dated July 20, 2016, is modified to include the additional fact
findings made by the Board in this Decision on Rehearing. Therefore, the
Examiner’s affirmance of the § 103 rejections in the Decision on Appeal
dated July 20, 2016, is again designated as new grounds of rejection. The
rejections are as follows:
1. claims 1—6 and 8—20 under 35 U.S.C. § 103(a) as being
unpatentable over Sandig;
2. claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
Sandig in view of Ishizuka;6 and
3. claims 22 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Sandig in view of Igaki.7
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection under 37 C.F.R.
§ 41.50(b) which provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
6 Ishizuka, US 2005/0007598 Al, published Jan. 13, 2005.
7 Igaki, US 5,327,218 A, issued July 5, 1994.
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Application 13/068,659
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2014).
See 37 C.F.R. § 41.50(f).
REHEARING GRANTED
7